Complainant
owns and uses the common law trademark Blue Max in connection with computer-related
products. In 1998, Complainants company was reincorporated under
the name Blue Max Technology. Complainant also owns the domain name,
bluemax.net. In 1996, Respondent registered the domain name, Bluemax.com.
For a brief period, Respondent used the domain name in question to link
users to a test page for an under construction auction site. Respondent
has since stopped using the domain name in question completely.

HELD,
Name Transferred to Complainant.

Domain name
is identical or confusingly similar to the mark in which Complainant has
rights. Further, Respondent has no rights or legitimate interests
in respect of the domain name.

Respondent
used the domain name to attract users to the auction site prior to 1999.
Attracting users to a website by creating a likelihood of confusion with
Complainants mark as to the source of the website is evidence of bad faith
registration and use. Moreover, Respondents current passive holding
of the domain name constitutes bad faith use. Finally, Respondent
offered the domain name for sale to Complainant and Complainants competitors
for valuable consideration in excess of out-of-pocket expenses. All
these serve as evidence of bad faith registration and use.

The domain
name at issue is "Bluemax.com", registered with Network Solutions Inc ("NSI").

PANELIST

Hon. James
A. Carmody, as Panelist.

PROCEDURAL
HISTORY

Complainant
submitted a Complaint to the National Arbitration Forum ("The Forum") electronically
on July 5, 2000; The Forum received a hard copy of the Complaint on July
5, 2000.

On July 10,
2000, NSI confirmed by e-mail to The Forum that the domain name "Bluemax.com"
is registered with NSI and that the Respondent is the current registrant
of the name. NSI has verified that Respondent is bound by the NetworkSolutions
Service Agreement Version 4.0 and has thereby agreed to resolve domain-name
disputes brought by third parties in accordance with ICANNís UDRP.

On July 10,
2000, a Notification of Complaint and Commencement of Administrative Proceeding
(the "Commencement Notification"), setting a deadline of July 31, 2000
by which Respondent could file a Response to the Complaint, was transmitted
to Respondent via email, post and fax, and to all entities and persons
listed on Respondents registration as technical, administrative and billing
contacts by email.

On July 31,
2000, having received no Response from Respondent, using the same contact
details and methods as were used for the Commencement Notification, The
Forum transmitted to the parties a Notification of Respondent Default.

On August 3,
2000, pursuant to Complainants request to have the dispute decided by
a Single Member panel, The Forum appointed the Hon. James A. Carmody as
Panelist.

Having reviewed
the communications records in the case file, the Administrative Panel (the
"Panel") finds that The Forum has discharged its responsibility under Paragraph
2(a) of the Uniform Rules "to employ reasonably available means calculated
to achieve actual notice to Respondent." Therefore, the Panel may issue
its Decision based on the documents submitted and in accordance with the
ICANN Policy, ICANN Rules, The Forumís Supplemental Rules and any
rules and principles of law that the panel deems applicable, without the
benefit of any Response from the Respondent.

RELIEF SOUGHT

The Complainant
requests that the domain name be transferred from the Respondent to the
Complainant.

PARTIES
CONTENTIONS

A. Complainant

The Complainant
contends that the Respondent has registered a domain name that is identical
to its trademark registered for and in use by the Complainant. Further,
the Complainant contends that the Respondent has no rights or legitimate
interests tothe domain
name, and that the respondent has registered and is using the domain name
in bad faith.

B. Respondent

The Respondent
submitted no response in this matter. As a result, all reasonable inferences
of fact in the allegation of the Complainant will be deemed true.

FINDINGS

The Complainant
owns the common law trademark "Blue Max". From 1969 until 1998, the Complainants
company name was International Instrumentation, Inc. while computer related
products were known as Blue Max. Because of the widespread name recognition,
in 1998 the Complainant reincorporated the company under the name Blue
Max Technology. The Complainant uses the domain name <bluemax.net> to
promote its services on the Internet.

The Respondent
registered the domain name in question on May 3, 1996. In early 1999, the
Respondent used the domain name in question to link users to a test page
for an under construction auction site. During conversations with the Respondent,
the Respondent stated that the domain name in question was an unused, available
domain he owned for use in testing and developing an auction site. During
the end of 1999, the Respondent stopped using the domain name in question
completely.

In November
1999, the Complainant attempted to contact the Respondent to request that
the domain name be transferred to the Complainant. One of the Respondents
employees stated that the domain name was not being used and that he knew
of no plans to use the domain name. He suggested that the Complainant make
an offer to cover the Respondents expenses surrounding the domain name.
Over the next few months, the Respondent refused the Complainants multiple
offers (ranging from $200 to $10,000) and eventually started a bidding
war over the domain name with another party.

DISCUSSION

Paragraph 4(a)
of the ICANN Uniform Domain Name Dispute Policy ("Policy") directs that
the complainant must prove each of the following three elements to support
a claim that a domain name should be cancelled or transferred:

(1) the domain
name registered by the Respondent is identical or confusingly similar to
a trademark or service mark in which the Complainant has rights;

(2) the Respondent
has no rights or legitimate interests in respect of the domain name; and

(3) the domain
name has been registered and is being used in bad faith.

Identical and/or
Confusingly Similar

The Complainant
has common law rights in the mark BLUE MAX. The Respondents domain name
is identical to the Complainants mark. See Rollerblade, Inc. v. McCrady,
D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain
name such as "net" or "com" does not affect the domain name for the purpose
of determining whether it is identical or confusingly similar).

Rights or Legitimate
Interests

The Complainant
asserts that the Respondent has no rights or legitimate interests in the
domain names in question. The Respondent has not denied that assertion.

The domain
name in question is not a mark by which the Respondent is commonly known.
Policy ? 4(c)(ii). Rather, the Respondent is associated with the domain
name Compudigital Industries. The Respondent has made not argued that it
is usingthe domain
name in connection with a bona fide offering of goods and services or is
making a legitimate noncommercial or fair use of the site. Policy ? 4(c)(i),
(iii). Failure to respond to the Complaint permits the inference that the
use of the Complainants mark is misleading and Respondent has no rights
or legitimate interests in the domain name in question. See Hewlett Packard
Co. v. Full System, FA 94637 (Nat. Arb. Forum May 22, 2000.

Registration
and Use in Bad Faith

The Complainant
asserts that the Respondent acted and is acting in bad faith. The Respondent
has not denied that assertion.

The Respondent
used the domain name to attract users to the auction site prior to 1999.
Attracting users to a website or other on-line location by creating a likelihood
of confusion with the Complainants mark as to the source of the website
is evidenceof bad faith
registration and use. Policy ? 4(b)(iv). See America Online, Inc. v. Tencent
Communications Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding
that bad faith where the Respondent attracted users to a website sponsored
by theRespondent).

The Respondent
also is now passively holding the domain name without use. The Respondent
and its employee admitted that the domain name was not in use and was not
to be used in the immediate future. This is evidence of bad faith. See
TelstraCorp. v. Nuclear
Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (finding that passive holding
of a domain name is use of the domain name in bad faith).

The Respondent
used the domain name for a profit by offering it for sale to the Complainant
and the Complainants competitors for valuable consideration in excess
of out-of-pocket expenses. Policy ? 4(b)(i). See Hitachi, Ltd. v. Fortune
Intíl Dev. Ent, D2000-0412 (WIPO July 2, 2000) (finding Respondents
offer to sell the domain name for $100,000 constitutes bad faith).

Based on the
above, the panel concludes that the Respondent registered and used the
domain name in bad faith.

DECISION

Having established
all three elements required by the ICANN Policy Rule 4(a), it is the decision
of the panel that the requested relief be granted.

Accordingly,
for all of the foregoing reasons, it is ordered that the domain name, "Bluemax.com"
be transferred from the Respondent to the Complainant.James
A. Carmody, Judge (Ret.), PanelistDated:
August 6, 2000

Domain Name Transferred

Generic selectors

Exact matches only

Exact matches only

Search in title

Search in title

Search in content

Search in content

Search in excerpt

Search in posts

Search in posts

Search in pages

Search in pages

Filter by Categories

DNattorney com blog

DNattorney.com blog

Uncategorised

Uncategorised

Fast Free Consultations

CALL US TOLL-FREE at 1-866-654-7129

Are you buying or selling domain names?

If you are interested in buying a domain name, a domain name portfolio, a website, or network of websites, very often a better price can be obtained from the seller by employing the services of an experienced Internet lawyer. We have acted for numerous domain name and website buyers and sellers, all over the world. We have acted in sales of single domain names from as little as $10,000.00 to sales of major domain name portfolios of over $10,000,000.00

Do you need help in a Domain Name Dispute?

We represent both domain name registrants and trademark owners in connection with Domain Name Disputes. Since 1999, we have represented hundreds of clients all over the world in Internet Corporation for Assigned Names and Numbers (ICANN) Uniform Dispute Resolution Policy (UDRP) Complaints before the World Intellectual Property Organization (WIPO), the National Arbitration Forum (NAF), the Asian Domain Name Dispute Resolution Centre (ADNDRC), and in Canadian Internet Registration Authority (CIRA) arbitrations before the British Columbia International Commercial Arbitration Centre (BCICAC) and Resolution Canada, as well as other online arbitration service providers.

Did cybersquatters take your domain name?

The first step in recovering your domain name from a cybersquatter is research. Whenever we are retained to assist you with recovering a domain name that rightfully belongs to you, we begin by thoroughly researching every aspect of the domain name and investigating the background of the cybersquatter. We employ unique methods that enable us to know who the cybersquatter is, what their intentions are, and the best method for recovering a particular domain name in the circumstances. In this manner, we always are able to provide you with the complete picture of the prospects for recovery and the issues that may be faced during the recovery process.

Who operates DNattorney.com?

Zak Muscovitch is a Canadian intellectual property lawyer. He is the founder of Domain Name Law Reports and has represented clients before domain name arbitrations in cases against companies like Google, Torstar, and Molson. Muscovitch was the founder and publisher of Domain Name Law Reports - a volunteer organization that helped lawyers research Uniform Domain-Name Dispute-Resolution Policy and cases. Muscovitch has also released several studies. In 2010 he published a study following the case distribution among the panelists at National Arbitration Forum.